WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Super Privacy Service LTD c/o Dynadot / Wu Yu

Case No. D2021-2017

1. The Parties

The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.

The Respondent is Super Privacy Service LTD c/o Dynadot / Wu Yu, China.

2. The Domain Name and Registrar

The disputed domain name <louerleclerc.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 1, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021.

The Center appointed Marilena Comanescu as the sole panelist in this matter on August 17, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant Association des Centres Distributeurs E. Leclerc - A.C.D. Lec is a French association, being one of the most renowned chain of supermarkets and hypermarkets strores in France. The name “leclerc” derives from the name of the founder and promoter of the association, Mr. Edouard Leclerc.

Currently the Complainant employs approximately 133,000 people, owns about 721 stores in France and around 100 in another European countries such Poland, Spain, Portugal, Andorra and Slovenia.

The Complainant holds trademark registrations for LECLERC, such as the European Union Trade Mark Registration No. 002700656 filed on May 17, 2002 and registered on February 26, 2004 for LECLERC (word), covering goods and services in classes 1- 45.

The Complainant’s websites are available at <e-leclerc.com> and <mouvement.leclerc>.

The disputed domain name was registered on March 7, 2021 and, at the time of filing the Complaint, it was used to redirect Internet users to random pages.

On May 5, 2021 the Complainant sent a cease and desist letter to the Respondent listed in the WhoIs informing it with regard to its trademark rights. Two follow up emails were sent on May 14, 2021, respectively May 19, 2021. No response was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its distinctive and well-known trademark LECLERC together with an additional descriptive term “louer”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith knowing the Complainant’s trademark and business. The Complainant requests the transfer of the disputed domain name to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Panel finds that the Complainant holds rights in the LECLERC trademark.

The disputed domain name incorporates the trademark LECLERC with an additional term, “louer”. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.site”, “.info”, “.shop”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain name is confusingly similar to the trademark LECLERC, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark LECLERC, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.

In fact, at the time of filing the Complaint, the disputed domain name resolved to links redirecting to random pages. Such use of the disputed domain name cannot qualify as an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise.

Furthermore, and without prejudice to the above, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety in combination with an additional term, “louer”, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant uses the LECLERC mark since at least 2002 and such mark is well-known in France and few other European countries. Previous UDRP panels have found the Complainant’s mark to be well-known or famous. See for example Association des Centres Distributeurs E. Leclerc v. Redacted for Privacy,See PrivacyGuardian.org / pastal dolly malhotra, WIPO Case No. D2021-0037; Association des Centres Distributeurs E. Leclerc – A.C.D. Lec v. WhoisGuard Protected, WhoisGuard, Inc. / yop poyo, WIPO Case No. D2020-2142; Association des Centres Distributeurs E. Leclerc v. Privacy Protection / Andrei Kislovodskii, WIPO Case No. D2019-0108; or Association des Centres Distributeurs E. Leclerc - ACD Lec contre Guziewicz Ryszard, WIPO Case No. D2018-0482.

The disputed domain name was registered in 2021 and reproduces the Complainant’s well-known mark together with the term “louer” that derives from the French word “to rent”, closely associated with the Complainant’s services which include, inter alia, car renting services.

From the above and the available record, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, with knowledge of the Complainant and targeting its trademark.

At the time of filing the Complaint, the disputed domain name redirects Internt users to random pages.

Given the circumstances in this case particularly because the disputed domain name incorporates the Complainant’s famous and distinctive trademark together with a descriptive term closely associated with the Complainant’s business, the disputed domain name is used to redirect to third parties webpages, in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.

Such circumstances are listed under paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

Such use may also disrupt the Complainant’s business and tarnish the reputation of the Complainant’s trademark because, the Internet users accessing the website under the disputed domain name may wrongly believe that the website to which it resolves is the Complainant’s own website or that the Complainant’s website is not correctly functioning or has been hacked.

Furthermore, the Respondent Wu Yu was apparently involved in several UDRP disputes decided against it. See Indeed inc. v. Wu Yu, WIPO Case No. DQA2019-0002, and Belfius Bank S.A. / Belfius Bank N.V. v. Wu Yu, WIPO Case No. D2021-1879. Such circumstances may fall under the provisions of paragraph 4(b)(ii) of the Policy which provides that “you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”

The Respondent registered the disputed domain name under a privacy service, did not respond to the Complainant’s prior letters and did not put forward any arguments in its favor in this present proceeding. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can, by itself, constitute a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <louerleclerc.com> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: August 30, 2021